April 30, 2009 marks the second anniversary of the Supreme Court’s decision in KSR International v. Teleflex, a decision which made subtle but significant modifications to the rules for deciding when a patent is invalid as obvious. KSR rejected the Federal Circuit’s rigid application of the “teaching, suggestion or motivation to combine” test, and emphasized the importance of common sense to the analysis: when a claimed invention combines familiar elements according to known methods to a yield predictable result, it is probably obvious. While the test may be driven by common sense, marshalling the evidence necessary to prove obviousness can be challenging. A team of Dorsey trial lawyers recently had first hand experience with KSR, and the practical difficulties of proving invalidity, spending two weeks trying to convince a San Francisco federal court jury that a patent (held by our client’s competitor) was invalid as obvious.
A patent claim can be rendered obvious if the features of the claim are found in separate pieces of prior art. For example, a claim to a machine with components A, B and C may be invalid as obvious if each of these components is found in a separate prior art machine. Two competing considerations are at the heart of any obviousness analysis. On the one hand, there is the basic policy that obvious combinations of old features should not be patentable. On the other hand, there is the practical concern that hindsight is 20-20; one can argue that anything is obvious after the fact. To reconcile these competing considerations, the U.S. Court of Appeals for the Federal Circuit had long held that one could not simply combine items of prior art to render a claim obvious. Rather, the party challenging validity had to show that there was some “teaching, suggestion or motivation,” that would have caused one of ordinary skill to make the combination. In KSR International Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007), the U.S. Supreme Court held that the Federal Circuit’s rigid application of “teaching, suggestion or motivation” as the test of obviousness was improper, and needlessly constricted the obviousness inquiry. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” The district courts and the Federal Circuit have struggled with the application of the obviousness standard in the aftermath of KSR.
Dorsey’s client was sued for infringing a patent on a bundle breaker. A bundle breaker is a machine that used to break long stacks or “logs” of perforated corrugated board into “bundles.” A conveyor belt brings the log into the machine. The bundle breaker then clamps down on the log on either side of the perforated line. The downstream side of the machine pivots to break the bundle from the log. The patent claims were directed to a bundle breaker with a fluid pressurized “compliance structure” on the top clamp. The compliance structure allows the bundle breaker to clamp down on multiple logs of uneven height.
The evidence showed that there were many styles of compliance structures that were found on prior art bundle breakers. Some were fluid pressurized, some were not. One bundle breaker had a compliance structure on the top clamp. Another had a compliance structure on the bottom clamp. Finding these machines and gathering admissible evidence was the first problem. Some of the machines were old and out of service. Finding the operators who could remember seeing them in working condition a dozen years ago was a challenge. One of the key machines (located in Australia) had been modified, and its compliance structure removed, so Dorsey’s client built a replica of the original machine.
Once the prior art bundle breakers had been found and examined, it remained to explain to the jury how the machines, and in particular their compliance structures, worked. Dorsey worked with a consultant to prepare animations showing the machines in operation. The animations allowed the judge and jury to go inside the machine to see parts normally hidden from view. Follow these links to see some of the animations that were used as demonstrative exhibits at trial. Link A Link B An expert witness was able to use the animations to explain the prior art machines, and to compare them to the claims of the patent.
After several days of deliberation the jury deadlocked. While the jury was at an impasse, however, the trial judge was not so indecisive, ruling that the Dorsey team had proven by clear and convincing evidence that the claimed invention was obvious, and that no reasonable jury could conclude otherwise. The judge found the issue resolved by a straightforward application of KSR, as the design alternatives were well defined. Plaintiff’s own expert admitted under cross examination that there were really only two places to put a compliance structure on a bundle breaker – the top clamp or the bottom – and that there were pluses and minuses to each approach that would be readily apparent to one of ordinary skill. The judge ruled that “[a] skilled artisan would have plainly known these two options, indeed the only two possible solutions, appreciate the advantages and disadvantages to each and design accordingly.” The judge found that the patented invention was just a combination of features known in the prior art; any minimal differences from the prior art were design choices known to one of ordinary skill in the art. The ruling ended twenty-one months of hard-fought litigation and defeated a damage claim of approximately $10,000,000 that had been asserted against Dorsey’s client.
Patents are presumed to be valid. A defendant in a patent infringement case has the burden of proving invalidity by clear and convincing evidence. To mount a successful validity challenge there must be close coordination between the lawyers, the client and the expert witnesses. The client is typically an active participant in the industry, and can identify the closest prior art. The lawyers need to have a thorough understanding of the art, so that the issues can properly framed during the claim construction process. Expert witnesses, who are often at the heart of any patent litigation, must be fully qualified and careful students of both the patent and the prior art. Missteps anywhere along the way can be costly.